DEPARTMENT OF COMMERCE
Patent and Trademark Office
Docket No. PTO-T-2007-0003
Notice of the Removal of the Paper Search Collection of
Registered Word-Only Marks from
Trademark Search Library in Arlington, Virginia
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: The United States Patent and Trademark Office ("USPTO") hereby
provides sixty (60) days notice of the microfilming and removal of the
paper search collection of registered marks consisting only of words from
the USPTO's Trademark Search Facility in Arlington, VA. This Notice does
not concern the paper search collection of registered marks that consist
of or include design elements.
DATES: Removal of the paper search collection of registered word-only marks
shall be effected beginning sixty (60) days from the date of this Notice.
FOR FURTHER INFORMATION CONTACT:
Jennifer Chicoski, Office of the Commissioner for Trademarks,
571-272-8943
SUPPLEMENTARY INFORMATION:
Under 35 U.S.C. 41(i), the USPTO must maintain a collection of United
States trademark applications and registrations for use by the public
in paper, microform, or electronic form. The provision authorizing an
electronic search collection was added by Sec. 4804(d)(1) of the American
Inventors Protection Act of 1999 ("AIPA"), Title IV, Subtitle B, of
Public Law 106-113, 113 Stat. 1501, 1501A-589. The USPTO currently
maintains a searchable electronic database of registered marks and
marks in pending applications, as well as text and images of marks in
abandoned, cancelled and expired records dating back to 1984.
Government insignia protected by U.S. law or by Article 6ter of the
Paris Convention, and insignia that various federally and state
recognized Native American tribes have identified as their official
tribal insignia are also included. Trademark examining attorneys have
relied exclusively on the electronic search system since before 1990.
Section 4804(d)(2) of the AIPA provides that the USPTO can
eliminate the paper or microform search collection only pursuant to
notice and opportunity for public comment, and only after submitting a
report to the Committees on the Judiciary of the Senate and the House
of Representatives detailing its plan for removal, and certifying that
the implementation of such plan will not negatively impact the public.
On May 9, 2003, the USPTO certified to Congress that the USPTO could
cease to maintain a paper search collection of marks that consist only
of words, without harm to the public. The 2003 report and certification
are currently available on the USPTO Web site at
http://www.uspto.gov/web/offices/com/sol/comments/epubsearch/crtpapr.pdf.
While the 2003 report and certification remain effective, the
United States subsequently entered a stipulated settlement in National
Intellectual Property Researchers Association, Inc. v. Rogan, Civ. A.
No. 03-808-A. Among other terms, the settlement required that the USPTO
continue to maintain its paper search collection through at least
January 1, 2006, to publish a Federal Register notice sixty (60) days
prior to ceasing maintenance, and to create microform copies of all
paper trademark registrations and expired trademark registrations prior
to disposing of them.
In a June 23, 2006, Federal Register Notice, the USPTO announced that
it "has determined that a paper collection of registered word marks is no
longer necessary, and has met the requirements of the AIPA with respect to
their removal. All papers will be microfilmed prior to removal and the
microform collection will be available to the public in the Public Search
Facility at 600 Dulany Street, Alexandria, Virginia." 71 FR 36065, 36067
(June 23, 2006). The Notice provided that "[b]ecause the USPTO will
continue to maintain all existing word marks in non-electronic form, i.e.,
on microfilm, the certification requirements of AIPA Sec. 4804(d)(2) are
not applicable to such marks." Id. The Notice further indicated that the
USPTO would issue a notice sixty (60) days prior to the removal of the
paper collection of registered word-only marks. Id.
Accordingly, the USPTO hereby gives notice that beginning sixty
(60) days from the date of this Notice, the USPTO will begin removing
the paper collection of active and expired trademark registrations that
consist only of words. All papers will be microfilmed before being
discarded, and the microform collection will be available to the public
in the Public Search Facility at 600 Dulany Street, Alexandria,
Virginia. This will ensure that all information currently available in
the paper search collection remains available to the public.
JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office